EXHIBIT 10.12
Certain portions of this Exhibit
have been omitted pursuant to a request for confidentiality. Such
omitted portions, which are marked with brackets and asterisks
[***], have been separately filed with the Commission.
SECOND AMENDMENT TO LICENSE
AGREEMENT
This Second Amendment to License
Agreement (“Second Amendment”) is effective as of this
29 th day of August, 2003 (the
“Effective Date”), by and between Pharmasset, Ltd., a
Barbados International Business Company, with offices located at
The Financial Services Center, Bishop’s Court Hill, Suite
111, St. Michael, Barbados (“ Pharmasset ”) and
Emory University, a not-for-profit Georgia corporation with offices
at 1380 South Oxford Road, N.E., Atlanta, Georgia 30322
(“Emory”), and amends certain terms of that certain
License Agreement, dated December 30, 1998, between Emory and
Pharmasset relating to D-D4FC (the
“Agreement”).
RECITALS:
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A.
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Emory and
Pharmasset have previously entered into the Agreement, pursuant to
which Emory has licensed certain patent rights and know-how owned
or controlled by Emory to Pharmasset relating to D-D4FC (as defined
in the Agreement).
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B.
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Emory and
Pharmasset entered into a First Amendment to the Agreement dated
September 24, 1999, which First Amendment automatically
terminated and is of no force and effect.
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C.
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Pharmasset and
DuPont Pharmaceuticals Company (“DPC”) entered into a
sublicense agreement effective as of August 16, 1999 whereby
Pharmasset sublicensed certain rights relating to D-D4FC to DPC,
which sublicense agreement is now terminated.
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D.
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Pharmasset has
negotiated and desires to enter into a sublicense agreement with
Incyte Corporation (“Incyte”) whereby, inter
alia , certain rights licensed to Pharmasset pursuant to the
Agreement are to be sublicensed to Incyte pursuant to a
Collaboration and License Agreement (the “Sublicense”),
which Emory has reviewed.
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E.
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Pharmasset and
Emory deem it advisable to effect certain modifications to the
Agreement as provided for herein.
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NOW, THEREFORE, for good and
valuable consideration, the receipt and sufficiency of which are
acknowledged by each of the parties, Pharmasset and Emory hereby
agree as follows:
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1.1
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Use of
Existing Definitions .
All terms used in this Second Amendment and not otherwise defined
herein shall have the same meanings ascribed to them in the
Agreement.
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1
Certain portions of this Exhibit have been
omitted pursuant to a request for confidentiality. Such omitted
portions, which are marked with brackets and asterisks [***], have
been separately filed with the Commission.
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1.2
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Amendment of
Definitions . The
Agreement is hereby amended to provide that:
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1.2.1
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Section 1.8 of the Agreement is deleted in
its entirety and replaced with the following:
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“Licensed Compounds”
shall mean
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(i)
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ß-D-2’,3’-dideoxy-2’,3’-didehydro-5-flrorocytidine
(also known and referred to herein as D-D4FC) and any salts,
esters, [***] derivatives thereof and [***] prodrugs thereof, and
any complexes, hydrates and solvates thereof;
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(ii)
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any [***]
analogs of D-D4FC and any salts, esters, [***] derivatives thereof
and [***] prodrugs thereof and any complexes, hydrates and solvates
thereof.
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1.2.2
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Solely as to
Incyte as sublicense under the Sublicense, the provisions of
Section 1.35 of the Sublicense, relating to the definition of
“Net Sales”, shall apply in lieu of the provision of
Section 1.14 of the Agreement with the following
changes:
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1.2.2.1
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Each instance
of the term “Net Sales” shall be replaced by the term
“Net Selling Price” and every instance of
“Product” shall be replaced with “Licensed
Product” and “Combination Product” shall have the
meaning ascribed to that term in the Sublicense.
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2.
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Amendment of
Other Provisions of the Agreement . The provisions of the Agreement, other than
definitions, are hereby amended as follows:
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2.1
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Exhibit
A . Exhibit A of the
Agreement is deleted in its entirety and replaced with Exhibit A to
this Second Amendment.
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3.
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Consent : Emory hereby consents to Pharmasset entering
into the Sublicense with Incyte pursuant to the Collaboration and
License Agreement substantially similar to the draft dated
August 29, 2003.
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4.1
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Unamended
Terms of Agreement Remain in Effect . Except as expressly amended hereby, the
remaining terms of the Agreement shall remain in full force and
effect.
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2
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4.2
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Entire
Agreement . The
Agreement, as amended by this Second Amendment, constitutes the
entire agreement between Emory and Pharmasset rega
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